Ex Parte GOBINATH et al

Patent Trial and Appeal Board

Nov 26, 2018

14753113 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/753,113 06/29/2015 Thulasiram GOBINATH
27280 7590 11/28/2018
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
DN2015-004 8925
EXAMINER
PAQUETTE, SEDEF ESRA A Y ALP
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
11/28/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
kathleen.swisher@goodyear.com
patents@ good year.com
pair_goodyear@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THULASIRAM GOBINATH,
ROBERT LEON BENEDICT, and
ARUNKUMARBYATARAYANAPURAGOPALA
Appeal2018-001555
Application 14/753,113
Technology Center 1700
Before JAMES C. HOUSEL, A VEL YN M. ROSS, and
JANEE. INGLESE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision we refer to the Specification filed June 29, 2015 ("Spec."),
the Final Office Action appealed from dated May 4, 2017 ("Final Act."), the
Appeal Brief filed May 19, 2017 ("Appeal Br."), and the Examiner's
Answer dated August 10, 2017 ("Ans.").
2 Appellant is the Applicant, The Goodyear Tire & Rubber Company, who is
also the real party in interest. Appeal Br. 3.
Appeal2018-001555
Application 14/753,113
STATEMENT OF THE CASE
The subject matter on appeal relates to an air maintenance pumping
assembly and tire. Spec. ,II. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A tire assembly comprising:
a tire having a tire cavity and first and second sidewalls
extending respectively from first and second tire bead regions to
a tire tread region,
the first sidewall having at least one bending region
operatively bending within a rolling tire footprint and a sidewall
groove defined by groove sidewalls positioned within
the bending region of the first tire sidewall, the groove deforming
segment by segment between a non-deformed state and a
deformed constricted state in response to the bending of the first
sidewall bending region within the rolling tire footprint, and
the sidewall groove, at an unloaded and pressurized
condition, having a groove width of 1. 7 mm to 2.3 mm and a
longitudinal groove angle of 30° to 31 ° relative to a road surface
of the tire.
Appeal Br. 8 (Claims App'x).
REJECTIONS
The Examiner maintains the following rejections:
A. Claim 1 stands rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final
Act. 3.
B. Claim 1-14 stands rejected under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor regards as the
invention. Id.
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Application 14/753,113
C. Claim 1-14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Delgado 3 in view ofLosey. 4 Id. at 4.
D. Claim 1-14 stands rejected on the ground of nonstatutory
double patenting as unpatentable over claims 1-5 and
claims 7-14 of Delgado in view of Losey. Id. at 9.
Appellant seeks our review of Rejections C-D. See generally Appeal
Br. Appellant argues claim 1 and does not present separate argument for
any other claim. We, therefore, limit our discussion to claim 1. Claims 2-
14 stand or fall with that claim. 37 C.F.R. § 4I.37(c)(l)(iv) (2013); see also
Appeal Br. 4 ("claims 2-14 stand or fall with claim 1"). Appellant does not
address Rejections A and B, and therefore, does not identify any reversible
error by the Examiner. Thus, we summarily affirm Rejections A and B.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections .... ")). After considering the
evidence presented in this Appeal and each of Appellant's arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
3 Andres Ignacio Delgado, US 8,381,784 B2, issued February 26, 2013
("Delgado").
4 Losey et al., US 8,042,586 B2, issued October 25, 2011 ("Losey").
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Application 14/753,113
Examiner's rejections, we do so for the reasons expressed in the Final Office
Action and the Answer. We add the following for emphasis.
Rejection C- Obviousness (claims 1-14)
The Examiner rejects claims 1-14 as obvious over the combination of
Delgado and Losey. Final Act. 4. The Examiner finds that Delgado teaches
nearly all aspects of claim 1 except for "the sidewall groove, at a pressurized
condition, having a groove width of 1. 7 mm to 2.3 mm and a groove angle
of 30° to 31 ° relative to a road surface of the tire." Id. But, the Examiner
finds that the groove of Delgado is designed to contain an air tube where the
preferred width of the air tube is in the range of 2.2 to 3.8 mm. Id. at 5.
And, Losey explains that "the angles and groove dimensions will be suitably
correlated to the diameter of the air tube." Id. (citing Losey, col. 8, 11. 7-23).
Therefore, the Examiner finds that the air tube of Delgado, having a width of
2.2-3.8 mm, would have similar groove dimensions (according to Losey)
and therefore, would overlap with the claimed range. Ans. 10. The
Examiner also finds that Losey describes a sidewall groove where the
groove angle, "measuring the angle to be from a sidewall of the sidewall
groove to the centerline of the sidewall groove will also be 30°." Id.
Therefore, the Examiner finds that the angle of Losey overlaps with the
claimed range. Id. The Examiner reasons that one skilled in the art would
have reason to modify Delgado with the teachings of Losey "in order to ...
make the dimensions of the groove based on the size of the tire, and to
provide a groove of any shape with at least one side that will have a 30°
angle measured from a sidewall of the sidewall groove to the centerline of
the sidewall groove." Id.
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Application 14/753,113
Appellant argues first that the Examiner has not met the burden of
establishing a prima facie case of obviousness because neither Delgado nor
Losey "separately []or together, disclose or suggest a tire assembly as recited
in claim 1." Appeal Br. 5.
Appellant does not persuade us of reversible error. Appellant does not
specifically address or identify error in the Examiner's findings nor refer to
factual evidence of record. Attorney argument does not take the place of
factual evidence required to rebut a prima facie case of obviousness. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Next, Appellant contends that the Examiner has identified no reason
to modify Delgado in view of Losey "based on the size of the tire and the
tube used." Appeal Br. 5. As a result, Appellant asserts that any such
modification is the result of "hindsight judgment." Id.
We also do not find Appellant's hindsight argument persuasive
because the Examiner's reasons for combining the teachings of Delgado and
Losey are supported by the prior art disclosures themselves. See, e.g.,
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
("The invention must be viewed not after the blueprint has been drawn by
the inventor, but as it would have been perceived in the state of the art that
existed at the time the invention was made." ( citing Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985))). Here, as the Examiner
explains, the skilled artisan would have understood from the teachings of
Losey that the size of the groove must, to be functional, correlate to the size
of the air tube. Final Act. 5; Ans. 9-10. Because Delgado discloses an air
tube having a diameter ranging from 2.2-3.8 mm, "the groove diameter
disclosed by Delgado will correlate to the diameter of the air tube ... [ and]
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Application 14/753,113
is reasonably found to be in the range greater than 2.2 mm to less than 3.8
mm which overlaps with the claimed range." Ans. 10. A prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art. See In re Harris, 409 F.3d
1339, 1341 (Fed. Cir. 2005); see also In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003). A prima facie case of obviousness may be rebutted where
the prior art teaches away from the claimed invention or there are new and
unexpected results over the prior art. Iron Grip Barbell Co. Inc. v. USA
Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). In this case, Appellant
provides no such rebuttal evidence or argument. Thus, we discern no error
in the Examiner's findings and conclusions. Moreover, Appellant does not
identify any knowledge relied upon by the Examiner that was gleaned only
from the Appellant's disclosure and was not within the level of skill in the
art at the time of the invention. In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
Appellant further asserts that "modifying the apparatus of Delgado by
the teachings of Losey ... cannot be predicted, and is therefore
unpredictable and nonobvious under KSR." Appeal Br. 5. And, Appellant
contends that the Examiner's rationale contradicts the requirement that
predictability must be shown. Appeal Br. 6.
Appellant's argument does not convince us of reversible error by the
Examiner. As the Examiner explains, "combining the two references that
both teach air maintenance pumping assemblies and have structurally similar
elements and components as each other would have been obvious for one of
ordinary skill in the art and not unpredictable." Ans. 10. The Examiner
does not propose to modify Delgado to achieve the claimed groove diameter.
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Rather, the Examiner states that the claimed groove diameter overlaps with
the range suggested by Delgado. And, with respect to the groove angle, the
Examiner's modification of Delgado is based on Losey' s teaching that
groove angle must be "functionally sufficient to cause the groove sidewalls
to engage [the tube] within the groove and ... may [be] readily[]
determined as a function of the diameter of the tube employed." Final Act. 5
( emphasis added)( citing Losey, col. 8, 11. 20-23). Appellant does not
provide any reason to suggest that adjusting the groove angle in light of the
air tube and tire characteristics ( as suggested by Delgado and Losey) would
be unpredictable or lacks a reasonable expectation of success. KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("If a person of ordinary skill can
implement a predictable variation [of a known work], § 103 likely bars its
patentability. ").
We, therefore, sustain the Examiner's rejection of claims 1-14 as
obvious.
Rejection D - Nonstatutory Double Patenting Rejection (claims 1-14)
The Examiner rejects claims 1-14 on the ground of nonstatutory
double patenting as being unpatentable over claims 1-5 and 7-14 of
Delgado in view of Losey. Final Act. 9. In the Appeal Brief, Appellant
states that, "once all other rejections are reversed by the Board, a Terminal
Disclaimer will be submitted electronically and the fee for the Terminal
Disclaimer will be paid." Appeal Br. 6.
Appellant has not identified reversible error in the double patenting
rejections. Therefore, we summarily affirm the rejection based on
nonstatutory double patenting.
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Application 14/753,113
CONCLUSION
Appellant fails to identify reversible error in the Examiner's rejection
of claim 1 under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement.
Appellant fails to identify reversible error in the Examiner's rejection
of claims 1-14 under 35 U.S.C. § 112(b) as indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor regards as the invention.
Appellant fails to identify reversible error in the Examiner's rejection
of claims 1-14 under 35 U.S.C. § 103(a) as unpatentable over Delgado in
view of Losey.
Appellant fails to identify reversible error in the Examiner's rejection
of claims 1-14 on the ground of nonstatutory double patenting as
unpatentable over claims 1-5 and claims 7-14 of Delgado in view of Losey.
DECISION
For the above reasons, the Examiner's rejections of claims 1-14 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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